Exhibit 10.4
CONFIDENTIAL
Revised 8/9/01
CONFIDENTIAL LICENSE AGREEMENT
FOR THE GAME BOY ADVANCE VIDEO GAME SYSTEM
(EEA, AUSTRALIA AND NEW ZEALAND)
THIS LICENSE AGREEMENT ("Agreement") is entered into between NINTENDO CO.,
LTD. ("NCL") at 11-1 Kamitoba Hokotate-cho, Minami-ku, Kyoto, Japan 601-8501,
attention: General Manager, International Business Administration Department
(facsimile: 81.75.662.9619), and Activision, Inc., a corporation of California,
and its subsidiaries (Activision UK, Ltd., a limited company of the United
Kingdom; ATVI France, S.A.R.L., a corporation of France; Activision GmbH, a
corporation of Germany, and Activision Pty., Ltd., a limited company of
Australia) (jointly and severally "LICENSEE") at 3100 Ocean Park Blvd., Santa
Monica, CA 90405, Attn: Mr. Michael Hand (facsimile: 310.255.2152). NCL and
LICENSEE agree as follows:
1. RECITALS
1.1 NCL designs, develops, manufactures, markets and sells advanced design,
high-quality video game systems, including the GAME BOY ADVANCE(TM) system.
1.2 LICENSEE desires a license to use highly proprietary programming
specifications, development tools, trademarks and other valuable Intellectual
Property Rights of NCL, to develop, have manufactured, advertise, market and
sell video game software for play on the GAME BOY ADVANCE system.
1.3 NCL is willing to grant a license to LICENSEE on the terms and
conditions set forth in this Agreement.
2. DEFINITIONS
2.1 "Artwork" means the design specifications for the Game Cartridge label
and Printed Materials in the format specified by NCL in the Guidelines.
2.2 "Development Tools" means the development kits, programming tools,
emulators, and other materials that may be used in the development of Games
under this Agreement.
2.3 "Effective Date" means the last date on which all parties shall have
signed this Agreement.
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2.4 "Finished Product(s)" means the fully assembled Licensed Products, each
including a Game Cartridge with a Game Cartridge label packaged in a plastic bag
or other form of protective packaging, and Printed Materials.
2.5 "Game Cartridges(s)" means custom cartridges for play on the GAME BOY
ADVANCE system, incorporating semiconductor components in which a Game has been
stored.
2.6 "Game(s)" means interactive video game programs (including source and
object/binary code) developed for play on the GAME BOY ADVANCE system.
2.7 "Guidelines" means the current version or any future revision of the
"Game Boy Advance Guidelines" pertaining to the layout, trademark usage and
other requirements for the Game Cartridge label, instruction manual and Game
Cartridge packaging, "Game Boy Advance Development Manual", "Guidelines on
Ethical Content", and related guidelines. The Guidelines on Ethical Content are
attached as Annex A, and the remainder of the Guidelines have been provided to
LICENSEE independent of this Agreement. The Guidelines may be changed or updated
from time to time without notice.
2.8 "Independent Contractor" means any individual or entity that is not an
employee of LICENSEE, including any independent programmer, consultant,
contractor, board member or advisor.
2.9 "Intellectual Property Rights" means individually, collectively or in
any combination, Proprietary Rights owned, licensed or otherwise held by NCL
that are associated with the development, manufacturing, advertising, marketing
or sale of the Licensed Products, including, without limitation: (a) registered
and unregistered trademarks and trademark applications used in connection with
video games for play on the GAME BOY ADVANCE system including "Nintendo(TM)",
"GAME BOY ADVANCE(TM)," "AGB" and the "Official Nintendo Seal of Quality(TM)"
(some of these trademarks are set forth in Annex B, attached); (b) select trade
dress associated with the GAME BOY ADVANCE system and licensed video games for
play thereon; (c) Proprietary Rights in the Security Technology incorporated
into the Game Cartridges; (d) rights in the Development Tools provided by or on
behalf of NCL for use in developing the Games; (e) patents, patent applications,
utility models, or design registrations associated with the Game Cartridges; (f)
copyrights in the Guidelines; and (g) other Proprietary Rights of NCL in
Confidential Information.
2.10 "Licensed Products" means (a) Finished Products when fully assembled
with Game Cartridge label affixed and packaged in a plastic bag or other form of
protective
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packaging with the Printed Materials; or (b) Stripped Products with Game
Cartridge label affixed.
2.11 "Marketing Materials" means marketing, advertising or promotional
materials developed by or for LICENSEE (or subject to LICENSEE's approval) to
promote the sale of the Licensed Products, including but not limited to
television, radio and on-line advertising, point-of-sale materials (e.g.
posters, counter-cards), package advertising, and print.
2.12 "NDA" means the non-disclosure agreement providing for the protection
of Confidential Information related to the GAME BOY ADVANCE system previously
entered into between NCL and/or NOA and LICENSEE.
2.13 "NOA" means NCL's subsidiary, Nintendo of America Inc., of Redmond,
Washington, USA.
2.14 "Notice" means any notice permitted or required under this Agreement.
All notices shall be sufficiently given when (a) personally served or delivered,
or (b) transmitted by facsimile, with an original sent concurrently by mail, or
(c) deposited, postage prepaid, with a guaranteed air courier service, in each
case addressed as stated herein, or addressed to such other person or address
either party may designate in a Notice. Notice shall be deemed effective upon
the earlier of actual receipt or two (2) business days after transmittal.
2.15 "Price Schedule" means the current version(s) or any future
revision(s) of NCL's schedule of purchase prices and minimum order quantities
for the Licensed Products. The Price Schedule has been provided to Licensee
independent of this Agreement and may be changed or updated from time to time
without notice.
2.16 "Printed Materials" means the box, user instruction booklet, poster,
warranty card and LICENSEE inserts incorporating the Artwork, together with a
precautions booklet as specified by NCL.
2.17 "Proprietary Rights" means any rights or applications for rights to
the extent recognized in the Territory relating to the GAME BOY ADVANCE System,
and owned, licensed or otherwise held in patents, trademarks, service marks,
copyrights, semiconductor chip layouts or masks, trade secrets, trade dress,
moral rights and publicity rights, together with all inventions, discoveries,
ideas, know-how, data, information, processes, methods, procedures, formulas,
drawings and designs, computer programs, software source code and object code,
and all amendments, modifications, and improvements thereto for which such
patent, trademark, service mark, copyright, semiconductor chip layout or mask,
trade secrets, trade dress, moral rights or publicity rights may exist or may be
sought and obtained in the future.
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2.18 "Reverse Engineer(ing)" means any technique designed to extract source
code or facilitate the duplication of a program or product including, without
limitation, (a) the x-ray, electronic scanning or physical or chemical stripping
of semiconductor components, or (b) the disassembly, decompilation, decryption
or simulation of object code or executable code.
2.19 "Security Technology" means, without limitation, any security
signature, bios, data scrambling, password, hardware security apparatus,
watermark, hologram, copyright management information system or any feature
which facilitates or limits compatibility with other hardware or software
outside of the Territory or on a different video game system.
2.20 "Stripped Product(s)" means the Game Cartridges with Game Cartridge
labels affixed.
2.21 "Term" means three (3) years from the Effective Date.
2.22 "Territory" means any and all countries within the European Economic
Area; namely Austria, Belgium, Denmark, Finland, France, Germany, Greece,
Iceland, Ireland, Italy, Liechtenstein, Luxembourg, the Netherlands, Norway,
Portugal, Spain, Sweden and the United Kingdom. The Territory shall also include
Australia, New Zealand, and Switzerland. NCL may add additional countries to the
Territory upon written notice to Licensee.
2.23 "(TM)" means trademark of NCL, whether registered or not.
3. GRANT OF LICENSE; LICENSEE RESTRICTIONS
3.1 Limited License Grant. For the Term and for the Territory, NCL grants
to LICENSEE a nonexclusive, nontransferable, limited license to use the
Intellectual Property Rights, for the purpose of and to the extent necessary, to
develop Games for manufacture, advertising, marketing and sale as Licensed
Products, subject to the terms and conditions of this Agreement. This license is
royalty-free.
3.2 LICENSEE Acknowledgement. LICENSEE's use of the Intellectual Property
Rights shall not create any right, title or interest of LICENSEE therein. In the
event that LICENSEE challenges NCL's ownership or the validity of the
Intellectual Property Rights, NCL may terminate this Agreement without any
notice or procedure.
3.3 Restrictions on License Grant: The present limited license to LICENSEE
does not extend to the use of the Intellectual Property Rights for the following
purposes:
(a) granting access to, distributing, transmitting or broadcasting a Game
by electronic means or by any other means known or hereafter devised including
without
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limitation, by wireless, cable, fiber optic, telephone lines, microwave,
radiowave, computer or other device network; provided, however, that limited
transmissions may be made for the sole purpose of facilitating development under
the terms of this Agreement, but no right of retransmission shall attach to any
such authorized transmission and, reasonable security measures, customary within
the high technology industry, shall be utilized to reduce the risk of
unauthorized interception or retransmission of any such authorized transmission,
(b) authorizing or permitting any online activities involving a Game,
including, without limitation, multiplayer, peer-to-peer or online play,
(c) modifying, installing or operating a Game on any server or computing
device for the purpose of or resulting in the rental, lease, loan or other grant
of remote access to the Game,
(d) emulating, interoperating, interfacing or linking a Game for operation
or use with any hardware or software platform, accessory, computer language,
computer environment, chip instruction set, consumer electronics device or
device other than the GAME BOY ADVANCE system or the Development Tools,
(e) embedding, incorporating, or storing a Game in any media or format
except the cartridge format utilized by the GAME BOY ADVANCE system, except as
may be necessary as a part of the Game development process under this Agreement,
(f) designing, implementing or undertaking any process, procedure, program
or act designed to circumvent the Security Technology,
(g) utilizing the Intellectual Property Rights to design or develop any
interactive video or computer game program, except as authorized under this
Agreement,
(h) manufacturing or reproducing a Game developed under this Agreement,
except through NCL, or
(i) Reverse Engineering or assisting in the Reverse Engineering of all or
any part of the GAME BOY ADVANCE system, including the hardware or software
(whether embedded or otherwise), or the Security Technology, except as
specifically permitted under the laws and regulations applicable in the
Territory.
3.4 Development Tools. NCL may lease, loan or sell Development Tools,
including any improvements made by NCL or NOA from time to time, to LICENSEE to
assist in the development of Games under this Agreement on such terms as may be
agreed between the parties. Ownership and use of such Development Tools shall be
subject to the
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terms of this Agreement, whether provided by NCL or NOA, prior to or during the
Term hereof. LICENSEE acknowledges the exclusive interest of NCL in and to the
Proprietary Rights associated with the Development Tools. LICENSEE's use of the
Development Tools shall not create any right, title or interest of LICENSEE
therein. Any license to LICENSEE to use the Development Tools does not extend
to: (a) use of the Development Tools for any purpose except the design and
development of Games under this Agreement; (b) reproduction or creation of
derivatives of the Development Tools, except in association with the development
of Games under this Agreement; (c) Reverse Engineering of the Development Tools
(except as specifically permitted under the laws and/or regulations applicable
in the Territory); or (d) selling, leasing, assigning, lending, licensing,
encumbering or otherwise transferring the Development Tools. Any tools developed
or derived by LICENSEE as a result of a study of the performance, design or
operation of the Development Tools shall be considered derivative works of the
Intellectual Property Rights, but may be retained and utilized by LICENSEE in
connection with this Agreement. Unless LICENSEE can demonstrate that such
derivative work has one or more applications that are independent of and
separate from the Intellectual Property Rights ("Independent Applications"), it
shall be deemed to have granted NOA and NCL an indefinite, worldwide,
royalty-free, transferable and exclusive license (including the right to
sub-license) to such derivative work. To the extent that LICENSEE can
demonstrate one or more Independent Applications, LICENSEE shall be deemed to
have granted to NOA and NCL a royalty-free and transferable nonexclusive license
(including the right to sub-license) in relation to such Independent
Applications for the Term and an indefinite, worldwide, royalty-free,
transferable and exclusive license (including the right to sub-license) in
relation to all other applications.
4. SUBMISSION OF GAME AND ARTWORK FOR APPROVAL
4.1 Development and Sale of the Games. LICENSEE may develop Games and have
manufactured, advertise, market and sell Licensed Products for play on the GAME
BOY ADVANCE system only in accordance with this Agreement.
4.2 Delivery of Completed Game. Upon completion of a Game, LICENSEE shall
deliver a prototype of the Game to NCL in a format specified in the Guidelines,
together with written user instructions, a complete description of any security
holes, backdoors, time bombs, cheats, "Easter eggs" or other hidden features or
characters in the Game ***. NCL shall promptly evaluate the Game with regard to:
(a) its technical compatibility with and error-free operation on the GAME BOY
ADVANCE system, and (b) its compliance with the game content guidelines of the
European Leisure Software Publishers Association (ELSPA), the Syndicate des
Editeurs de Logiciels de Loisir (SELL) or other independent European body.
LICENSEE shall provide NCL with a
[*] Confidential portion omitted and filed separately with the Securities and
Exchange Commission.
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certificate of a rating for the Game from the ELSPA, SELL, or other independent
European body other than "AO" or "ADULTS ONLY".
4.3 Approval of Completed Game. NCL shall, within a reasonable period of
time after receipt, approve or disapprove each submitted Game. If a Game is
disapproved, NCL shall specify in writing the reasons for such disapproval and
state what corrections or improvements are necessary. After making the necessary
corrections or improvements, LICENSEE shall submit a revised Game to NCL for
approval. NCL shall not unreasonably withhold or delay its approval of any Game.
The approval of a Game by NCL shall not relieve LICENSEE of its sole
responsibility for the development, quality and operation of the Game or in any
way create any warranty for a Game or a Licensed Product by NCL.
4.4 Submission of Artwork. Upon submission of a completed Game to NCL,
LICENSEE shall prepare and submit to NCL the Artwork for the proposed Licensed
Product. Within ten (10) business days of receipt, NCL shall approve or
disapprove the Artwork. If any Artwork is disapproved, NCL shall specify in
writing the reasons for such disapproval and state what corrections or
improvements are necessary. After making the necessary corrections or
improvements, LICENSEE shall submit revised Artwork to NCL for approval. NCL
shall not unreasonably withhold or delay its approval of any Artwork. The
approval of the Artwork by NCL shall not relieve LICENSEE of its sole
responsibility for the development and quality of the Artwork or in any way
create any warranty for the Artwork or the Licensed product by NCL.
4.5 Artwork for Stripped Product. If LICENSEE submits an order for Stripped
Product, all Artwork shall be submitted to NCL in advance of NCL's acceptance of
the order and no production of Printed Materials shall occur until such Artwork
has been approved by NCL under Section 4.4 herein.
5. ORDER PROCESS, PURCHASE PRICE, PAYMENT AND DELIVERY
5.1 Submission of Orders by LICENSEE. LICENSEE may at any time submit
written purchase orders to NCL for any approved Licensed Product title. The
purchase order shall specify whether it is for Finished Product or Stripped
Product. The terms and conditions of this Agreement shall control over any
contrary terms of such purchase order or any other written documents submitted
by LICENSEE. All orders are subject to acceptance by NCL or its designee.
5.2 Purchase Price and Minimum Order Quantities. The purchase price and
minimum order quantities for the Licensed Products shall be set forth in NCL's
then-current Price Schedule. The purchase price includes the cost of
manufacturing the Licensed
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Products. A current Price Schedule has been provided to LICENSEE independent of
this Agreement. No taxes, duties, import fees or other tariffs related to the
development, manufacture, import, marketing or sale of the Licensed Products
(except for taxes imposed on NCL's income) are included in the purchase price
and all such taxes are the responsibility of LICENSEE. The Price Schedule is
subject to change by NCL at any time without Notice.
5.3 Payment. Upon placement of an order, LICENSEE shall pay the full
purchase price to NCL either (a) by placement of an irrevocable letter of credit
in favor of NCL and payable at sight, issued by a bank acceptable to NCL and
confirmed, if requested by NCL, at LICENSEE's expense, or (b) in cash, by wire
transfer to NCL's designated account. All associated banking charges shall be
for LICENSEE's account.
5.4 Shipment and Delivery. NCL shall deliver the Finished Products or
Stripped Products ordered by Licensee to Licensee F.O.B. Japan with shipment at
Licensee's direction and expense. Upon mutual consent of NCL and Licensee,
orders may be delivered in partial shipments ***. Such orders shall be delivered
to countries within the Territory.
6. MANUFACTURE OF THE LICENSED PRODUCT
6.1 Designation of NCL. NCL (including through its subcontractors and
licensees) shall be the exclusive source for the manufacture of the Game
Cartridges, including all aspects of the manufacturing process, selection of the
locations and specifications for any manufacturing facilities, determination of
materials and processes, appointment of suppliers and subcontractors and
management of all work-in-progress.
6.2 Manufacture of the Licensed Products. Upon acceptance of a purchase
order for an approved Licensed Product title and payment as provided for under
Section 5.3 herein, NCL (including through its subcontractors and licensees)
will arrange for the manufacture of Finished Product or Stripped Product, as
specified in LICENSEE's purchase order. In this regard, LICENSEE shall submit to
NCL certain technical information as set forth in a questionnaire entitled
"Software Submission Requirements" which has been provided to LICENSEE by NCL.
6.3 Security Features. The final release version of the Game, Game
Cartridges and Printed Materials shall include such Security Technology as NCL,
in its sole discretion, may deem necessary or appropriate.
6.4 Production of Stripped Product Printed Materials. For Stripped Product,
LICENSEE shall arrange and pay for the production of the Printed Materials using
the Artwork. Upon receipt of an order Stripped Product, LICENSEE shall assemble
the Game
[*] Confidential portion omitted and filed separately with the Securities and
Exchange Commission
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Cartridges and Printed Materials into the Licensed Products. Licensed Products
may be sold or otherwise distributed by LICENSEE only in fully assembled
condition.
6.5 Sample Printed Materials and Stripped Product. Within a reasonable
period of time after LICENSEE's assembly of the initial order for a Stripped
Product title, LICENSEE shall provide NCL with: (a) one (1) sample of the fully
assembled Licensed Product; and (b) *** of LICENSEE-produced Printed Materials
for such Licensed Product.
6.6 Retention of Sample Licensed Products by NCL. NCL may, at its own
expense, manufacture reasonable quantities of the Game Cartridges or the
Licensed Products, not to exceed fifty (50) units, to be used for archival
purposes, legal proceedings against infringers of the Intellectual Property
Rights or for other lawful purposes, not to include sales of the units.
7. MARKETING AND ADVERTISING
7.1 Approval of Marketing Materials. LICENSEE represents and warrants that
the Marketing Materials shall (a) be of high quality and comply with the
Guidelines, and (b) comply ***. Prior to actual use or distribution, LICENSEE
shall submit to NCL for review samples of all proposed Marketing Materials. NCL
shall, within ten (10) business days of receipt, approve or disapprove such
samples. If any of the samples are disapproved, NCL shall specify the reasons
for such disapproval and state what corrections and/or improvements are
necessary. After making the necessary corrections and/or improvements, LICENSEE
shall submit revised samples for approval by NCL. No Marketing Materials shall
be used or distributed by LICENSEE without NCL's prior written approval. NCL
shall not unreasonably withhold or delay its approval of any proposed Marketing
Materials.
7.2 Bundling. In order to avoid use of the licensed Intellectual Property
Rights giving rise to any implication of NCL's sponsorship, association,
approval or endorsement where this is not the case, LICENSEE shall not, without
NCL's prior written approval, market or distribute any Finished Product or
Stripped Product that has been bundled with: (a) any peripheral designed for use
with the GAME BOY ADVANCE system which has not been licensed or approved in
writing by NCL; or (b) any other product or service where NCL's sponsorship,
association, approval or endorsement might be suggested by the bundling of the
products or services.
7.3 Warranty and Repair. LICENSEE shall provide the original consumer with
a minimum ninety (90) day (or such longer minimum period as may be required by
applicable
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Exchange Commission.
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law) limited warranty on all Licensed Products. LICENSEE shall also provide
reasonable product service, including out-of-warranty service, for all Licensed
Products.
7.4 Business Facilities. LICENSEE agrees to develop and maintain sufficient
customer service, either directly or through a third party, to adequately
support the Licensed Products.
7.5 No Sales Outside the Territory. LICENSEE represents and warrants that
it shall not market, sell, offer to sell, import or distribute the Licensed
Products outside the Territory, or within the Territory when with actual or
constructive knowledge that a subsequent destination of the Licensed Product is
outside the Territory.
7.6 Defects and Recall. In the event of a material programming defect in a
Licensed Product that would, in NCL's reasonable judgment, significantly impair
the ability of a consumer to play the Game, NCL may, after consultation with
LICENSEE, require the LICENSEE to recall the Licensed Product and undertake
suitable repairs or replacements.
7.7 NCL Promotional Materials, Publications and Events. NCL acknowledges
that Licensee has not granted a license to NCL with respect to any trademarks or
copyrights of Licensee associated with the Game, provided, however, Licensee
agrees that, with a view to improving the competitiveness of the video game
products consisting of Nintendo video game systems and services and compatible
software published by LICENSEE, at its option, NCL may: (a) insert in the
Printed Materials for the Licensed Products promotional materials concerning
publications and promotions for such video game products; (b) utilize screen
shots, Artwork and information regarding the Licensed Products in
Nintendo-published magazines or other advertising, promotional or marketing
media which promote such video game products; and (c) exercise public
performance rights in the Games and use related trademarks and Artwork in
connection with NCL sponsored contests, tours, conventions, trade shows, press
briefings and similar events which promote such video game products. Nintendo
shall submit to Licensee for review printed materials and related art for the
Game that Nintendo intends to use in publications or media or marketing
programs.
7.8 Nintendo Gateway System. To promote and increase demand for games on
Nintendo video game systems, NCL licenses a system (the "Nintendo Gateway
System") in various non-coin activated commercial settings such as commercial
airlines, cruise ships, rail systems and hotels, where customers play games on
specially adapted Nintendo video game systems. If NCL identifies a Game for
possible license on the Nintendo Gateway System, the parties agree to conduct
good-faith negotiations toward including the Game in the Nintendo Gateway
System.
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8. CONFIDENTIAL INFORMATION
8.1 Definition. "Confidential Information" means information provided to
LICENSEE by NCL or any third party working with NCL or NOA relating to the
hardware and software for the GAME BOY ADVANCE system or the Development Tools,
including, but not limited to: (a) all current or future information, know-how,
techniques, methods, information, tools, emulator hardware or software, software
development specifications, and/or trade secrets, (b) any inventions, patents or
patent applications, (c) any business, marketing or sales data or information,
and (d) any other information or data relating to development, design,
operation, manufacturing, marketing or sales. Confidential Information shall
include all confidential information disclosed, whether in writing, orally,
visually, or in the form of drawings, technical specifications, software,
samples, pictures, models, recordings, or other tangible items which contain or
manifest, in any form, the above listed information. Confidential Information
shall not include: (i) data and information which was in the public domain prior
to LICENSEE's receipt of the same hereunder, or which subsequently becomes part
of the public domain by publication or otherwise, except by LICENSEE's wrongful
act or omission, (ii) data and information which LICENSEE can demonstrate,
through written records kept in the ordinary course of business, was in its
possession without restriction on use or disclosure, prior to its receipt of the
same hereunder and was not acquired directly or indirectly from NCL or NOA under
an obligation of confidentiality which is still in force, and (iii) data and
information which LICENSEE can show was received by it from a third party who
did not acquire the same directly or indirectly from NCL or NOA and to whom
LICENSEE has no obligation of confidentiality.
8.2 Disclosures Required by Law. LICENSEE shall be permitted to disclose
Confidential Information if such disclosure is required by an authorized
governmental or judicial entity, provided that NCL is given Notice thereof at
least thirty (30) days prior to such disclosure. LICENSEE shall use its best
efforts to limit the disclosure to the greatest extent possible consistent with
LICENSEE's legal obligations, and if required by NCL, shall cooperate in the
preparation and entry of appropriate court orders limiting the persons to whom
Confidential Information may be disclosed and the extent of disclosure of such
Confidential Information.
8.3 Disclosure and Use. NCL may provide LICENSEE with highly confidential
development information, Guidelines, Development Tools, systems, specifications
and related resources and information constituting and incorporating the
Confidential Information to assist LICENSEE in the development of Games.
LICENSEE agrees to maintain all Confidential Information as strictly
confidential and to use such Confidential Information only in accordance with
this Agreement. LICENSEE shall limit access to the Confidential
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Information to LICENSEE's employees having a strict need to know and shall
advise such employees of their obligation of confidentiality as provided herein.
LICENSEE shall require each such employee to retain in confidence the
Confidential Information pursuant to a written non-disclosure agreement between
LICENSEE and such employee. LICENSEE shall use its best efforts to ensure that
its employees working with or otherwise having access to Confidential
Information shall not disclose or make any unauthorized use of the Confidential
Information.
8.4 No Disclosure to Independent Contractors. LICENSEE shall not disclose
the Confidential Information, including without limitation the Guidelines and
Intellectual Property Rights, to any Independent Contractor, nor permit any
Independent Contractor to perform or assist in development work for a Game,
without the prior written consent of NCL. Any Independent Contractor seeking
access to Confidential Information shall be required to enter into a written
non-disclosure agreement with NCL or NOA prior to receiving any access to or
disclosure of the Confidential Information from either LICENSEE or NCL.
At LICENSEE's option, the written non-disclosure agreement may be with LICENSEE
rather than NCL or NOA, in which case the form and substance of the
non-disclosure agreement must be acceptable to NCL. Also, in such case LICENSEE
shall provide to NCL on a continuing basis a listing of all Independent
Contractors who have received or been granted access to Confidential Information
along with copies of the applicable written non-disclosure agreements. In
addition, LICENSEE shall take all reasonable measures to ensure that its
Independent Contractors fulfill the requirements of the applicable written
non-disclosure agreements.
LICENSEE shall use its best efforts to ensure that its employees and Independent
Contractors working with or otherwise having access to Confidential Information
shall not disclose or make unauthorized use of the Confidential Information.
LICENSEE agrees to indemnify NCL against all loss or damage, including
consequential economic loss, for breach of these obligations by the LICENSEE,
its employees and Independent Contractors.
8.5 Agreement Confidentiality. LICENSEE agrees that the terms, conditions
and contents of this Agreement shall be treated as Confidential Information. Any
public announcement or press release regarding this Agreement or the release
dates for Games developed by LICENSEE under this Agreement shall be subject to
NCL's prior written approval. The parties may disclose this Agreement: (a) to
accountants, banks, financing sources, lawyers, parent companies and related
parties under substantially equivalent confidentiality obligations, (b) in
connection with any formal legal proceeding for the enforcement of this
Agreement, (c) as required by the regulations of the government agencies in the
Territory that regulate publicly-traded securities, provided that all
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Information regarding NCL shall be redacted from such disclosures
to the maximum extent allowed by such government agencies, and (d) in response
to lawful process, subject to a written protective order approved in advance by
NCL.
8.6 Notification Obligations. LICENSEE shall promptly notify NCL of the
unauthorized use or disclosure of any Confidential Information and shall
promptly act to recover any such information and prevent further breach of the
obligations herein. The obligations of LICENSEE set forth herein are in addition
to and not in lieu of any other legal remedy that may be available to NCL under
this Agreement or applicable law.
8.7 Continuing Effect of the NDA. The terms of this Section 8 supplement
the terms of the NDA, which shall remain in effect. In the event of a conflict
between the terms of the NDA and this Agreement, the terms of this Agreement
shall control.
9. REPRESENTATIONS AND WARRANTIES
9.1 LICENSEE's Representations and Warranties. LICENSEE represents and
warrants that:
(a) it is a duly organized and validly existing corporation and has full
authority to enter into this Agreement and to carry out the provisions hereof,
(b) the execution, delivery and performance of this Agreement by LICENSEE
does not conflict with any agreement or understanding to which LICENSEE may be
bound, and
(c) excluding the Intellectual Property Rights, LICENSEE is either (i) the
sole owner of all right, title and interest in and to the trademarks, copyrights
and other Proprietary Rights used on or in association with the development,
advertising, marketing and sale of the Licensed Products and the Marketing
Materials, or (ii) the holder of such rights to the trademarks, copyrights and
other Proprietary Rights which have been licensed from a third party as are
necessary for the development, advertising, marketing and sale of the Licensed
Products and the Marketing Materials under this Agreement.
9.2 NCL's Representations and Warranties. NCL represents and warrants that:
(a) it is a duly organized and validly existing corporation and has full
authority to enter into this Agreement and to carry out the provisions hereof,
and
(b) the execution, delivery and performance of this Agreement by NCL does
not conflict with any agreement or understanding to which NCL may be bound.
[*] Confidential portion omitted and filed separately with the Securities and
Exchange Commission
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9.3 ***
9.4 ***
9.5 LIMITATION OF LIABILITY. TO THE MAXIMUM EXTENT PERMITTED BY LAW,
NEITHER NCL NOR ANY OF ITS SUBSIDIARIES, AFFILIATES, LICENSORS OR SUPPLIERS
SHALL BE LIABLE FOR LOSS OF PROFITS, OR FOR ANY SPECIAL, PUNITIVE, INCIDENTAL OR
CONSEQUENTIAL DAMAGES OF LICENSEE OR ITS CUSTOMERS ARISING OUT OF OR RELATED TO
THIS AGREEMENT, INCLUDING, WITHOUT LIMITATION, THE BREACH OF THIS AGREEMENT BY
NCL, THE MANUFACTURE OF THE LICENSED PRODUCTS OR THE USE OF THE LICENSED
PRODUCTS ON ANY NINTENDO VIDEO GAME SYSTEM BY LICENSEE OR ANY END USER.
10. INDEMNIFICATION
10.1 LICENSEE's Indemnification of NCL. LICENSEE shall indemnify and hold
harmless NCL (and any of its respective affiliates, subsidiaries, licensors,
suppliers, officers, directors, employees or agents) from any claims, losses,
liabilities, damages, expenses and costs, including, without limitation,
reasonable attorneys' fees and costs and any expenses incurred in the settlement
or avoidance of any such claim, which result from or are in connection with:
[*] Confidential portion omitted and filed separately with the Securities and
Exchange Commission
CONFIDENTIAL
(a) a breach of any of the provisions, representations or warranties
undertaken by LICENSEE in this Agreement,
(b) any infringement of a third party's Proprietary Rights as a result of
the design, development, advertising, marketing, sale or use of the Licensed
Products or the Marketing Materials,
(c) any claims alleging a defect, failure to warn, bodily injury (including
death) or other personal or property damage arising out of, or in connection
with, the design, development, advertising, marketing, sale or use of any of the
Licensed Products, and
(d) any federal, state or foreign civil or criminal actions relating to the
design, development, advertising, marketing, sale or use of the Licensed
Products or the Marketing Materials.
NCL and LICENSEE shall give prompt Notice to the other of any indemnified claim
under this Section 10.1. With respect to any third party claim subject to this
indemnity clause, LICENSEE, as indemnitor, shall have the right to select
counsel and to control the defense and/or settlement thereof. NCL may, at its
own expense, participate in such action or proceeding with counsel of its own
choice. LICENSEE shall not enter into any settlement of any such claim in which
(i) NCL has been named as a party, or (ii) claims relating to the Intellectual
Property Rights have been asserted, without NCL's prior written consent. NCL
shall provide reasonable assistance to LICENSEE in its defense of any such
claim.
10.2 LICENSEE's Insurance. LICENSEE shall, at its own expense, obtain a
comprehensive policy of general liability insurance (including coverage for
advertising injury and product liability claims) from a recognized insurance
company. Such policy of insurance shall be in an amount of not less than the
equivalent of *** and shall provide for adequate protection against any suits,
claims, loss or damage by the Licensed Products. Such policy shall name NCL as
an additional insured and shall specify that it may not be canceled without
thirty (30) days' prior written Notice to NCL. A Certificate of Insurance shall
be provided to NCL not later than the date of the initial order of Licensed
Products under this Agreement or within 60 days of the effective date of this
Agreement, whatever date occurs later. If LICENSEE fails to maintain such
insurance at any time during the Term and for a period of two (2) years
thereafter, NCL may secure such insurance at LICENSEE's expense.
10.3 Suspension of Production. In the event NCL deems itself at risk with
respect to any claim, action or proceeding under this Section 10, NCL may, at
its sole option,
[*] Confidential portion omitted and filed separately with the Securities and
Exchange Commission
CONFIDENTIAL
suspend production, delivery or order acceptance for any Licensed Products, in
whole or in part, pending resolution of such claim, action or proceeding.
11. PROTECTION OF PROPRIETARY RIGHTS
11.1 Joint Actions Against Infringers. LICENSEE and NCL may agree to
jointly pursue cases of infringement involving of the Licensed Products, as such
Licensed Products will contain Proprietary Rights owned by each of them. Unless
the parties otherwise agree, or unless the recovery is expressly allocated
between them by the court, in the event of such an action, any recovery shall be
used first to reimburse LICENSEE and NCL for their respective reasonable
attorneys' fees and costs incurred in bringing such action, pro rata, and any
remaining recovery shall be distributed to LICENSEE and NCL, pro rata, based
upon the fees and costs incurred in bringing such action.
11.2 Actions by LICENSEE. LICENSEE, without the consent of NCL, may bring
any action or proceeding relating to an infringement or potential infringement
of LICENSEE's Proprietary Rights in the Licensed Products. LICENSEE shall make
reasonable efforts to inform NCL of such actions in a timely manner. LICENSEE
will have the right to retain all proceeds it may derive from any recovery in
connection with such actions.
11.3 Actions by NCL. NCL, without the consent of LICENSEE, may bring any
action or proceeding relating to an infringement or potential infringement of
NCL's Intellectual Property Rights in the Licensed Products. NCL shall make
reasonable efforts to inform LICENSEE of such actions in a timely manner. NCL
will have the right to retain all proceeds it may derive from any recovery in
connection with such actions.
12. ASSIGNMENT
12.1 No Assignment by LICENSEE. This Agreement is personal to LICENSEE and
may not be sold, assigned, delegated, sublicensed or otherwise transferred or
encumbered, in whole or in part, without NCL's prior written consent, ***. In
the event of an assignment or other transfer in violation of this Agreement, NCL
shall have the unqualified right to immediately terminate this Agreement without
further obligation to LICENSEE.
12.2 Assignment by Operation of Law. In the event of an assignment of this
Agreement by operation of law, LICENSEE shall, not later than thirty (30) days
thereafter, give Notice and seek consent thereto from NCL. Such Notice shall
disclose the name of the assignee, the effective date and the nature and extent
of the assignment. An assignment by operation of law includes, but is not
limited to: (a) a merger of LICENSEE into another business entity or a merger of
another business entity into LICENSEE (b) the sale
[*] Confidential portion omitted and filed separately with the Securities and
Exchange Commission
CONFIDENTIAL
assignment or transfer of all or substantially all of the assets of LICENSEE to
a third party, (c) the sale, assignment or transfer to a third party of any of
LICENSEE's Proprietary Rights which are used in the development of or are
otherwise incorporated into any Licensed Products, or (d) the sale, assignment
or transfer of any of LICENSEE's stock resulting in the acquirer having
management power over or voting control of LICENSEE. Following the later of: (i)
such an assignment by operation of law, or (ii) receipt of Notice therefor, NCL
shall have the unqualified right for a period of ninety (90) days to immediately
terminate this Agreement without further obligation to LICENSEE.
12.3 Non-Disclosure Obligation. In no event shall LICENSEE disclose or
allow access to NCL's Confidential Information prior to or upon the occurrence
of an assignment, whether by operation of law or otherwise, unless and until NCL
gives its written consent to such disclosure.
13. TERM AND TERMINATION
13.1 Term. This Agreement shall commence on the Effective Date and continue
for the Term, unless earlier terminated as provided for herein.
13.2 Default or Breach. In the event that either party is in default or
commits a material breach of this Agreement, which is not cured within thirty
(30) days after Notice thereof, then this Agreement shall automatically
terminate on the date specified in such Notice.
13.3 Bankruptcy. At NCL's option, this Agreement may be terminated
immediately and without Notice in the event that LICENSEE: (a) makes an
assignment for the benefit of creditors, (b) becomes insolvent, (c) files a
voluntary petition for bankruptcy, (d) acquiesces to any involuntary bankruptcy
petition, (e) is adjudicated as a bankrupt, or (f) ceases to do business.
13.4 Termination Other Than by Breach. Upon the expiration of this
Agreement or its termination other than by LICENSEE's breach, LICENSEE shall
have a period of *** to sell any unsold Licensed Products. All Licensed Products
in LICENSEE's control following the expiration of such sell-off period shall be
destroyed by LICENSEE within ten (10) days and proof of such destruction
(certified by an officer of LICENSEE) shall be provided to NCL.
13.5 Termination by LICENSEE's Breach. If this Agreement is terminated by
NCL as a result of a breach of its terms and conditions by LICENSEE, LICENSEE
shall immediately cease all distribution, advertising, marketing or sale of any
Licensed Products. All Licensed Products in LICENSEE's control as of the date of
such termination shall be
CONFIDENTIAL
destroyed by LICENSEE within ten (10) days and proof of such destruction
(certified by an officer of LICENSEE) shall be provided to NCL.
13.6 Breach of NDA or Other NCL License Agreements. At NCL's option, any
breach by LICENSEE of: (a) the NDA, or (b) any other license agreement between
NCL and LICENSEE relating to the development of games for any of NCL's video
game systems which is not cured within the time period for cure allowed under
the applicable agreement, shall be considered a material breach of this
Agreement entitling NCL to terminate this Agreement in accordance with Section
13.5 herein.
13.7 No Further Use of the Intellectual Property Rights. Upon expiration
and/or termination of this Agreement, LICENSEE shall cease all use of the
Intellectual Property Rights for any purpose, except as may be required in
connection with the sale of Licensed Products authorized under Section 13.4
herein. LICENSEE shall, within thirty (30) days thereafter, return or destroy
all Guidelines, writings, drawings, models, data, tools and other materials and
things in LICENSEE's possession or in the possession of any past or present
employee, agent or contractor receiving the information through LICENSEE, which
constitute or relate to or disclose any Confidential Information, without making
copies or otherwise retaining any such information. Proof of any destruction
shall be certified by an officer of LICENSEE and promptly provided to NCL.
13.8 Termination by NCL's Breach. If this Agreement is terminated by
LICENSEE as a result of a material breach of its terms or conditions by NCL,
LICENSEE may continue to sell the Licensed Products in the Territory until the
expiration of the Term, at which time the provisions of Section 13.4 shall
apply.
14. GENERAL PROVISIONS
14.1 Compliance with Applicable Laws and Regulations. LICENSEE shall at all
times comply with applicable laws, regulations and orders in the countries of
the Territory relating to or in any way affecting this Agreement and LICENSEE's
performance under this Agreement, including, without limitation, the export laws
and regulations of any country with jurisdiction over the Licensed Products
and/or either party. LICENSEE shall not market, distribute, or sell the Game
and/or Game Cartridges in any country in the Territory in which such marketing,
distribution or sale would violate any applicable laws, regulations or orders of
such country.
14.2 Force Majeure. Neither party shall be liable for any breach of this
Agreement occasioned by any cause beyond the reasonable control of such party,
including governmental, action, war, riot or civil commotion, fire, natural
disaster, labor disputes,
[*] Confidential portion omitted and filed separately with the Securities and
Exchange Commission
CONFIDENTIAL
restraints affecting shipping or credit, delay of carriers, inadequate supply of
suitable materials or any other cause which could not with reasonable diligence
be controlled or prevented by the parties. In the event of material shortages,
including shortages of materials or production facilities necessary for
production of the Licensed Products, NCL reserves the right to allocate such
resources among itself and its licensees.
14.3 Records and Audit. During the Term and for a period of *** thereafter,
LICENSEE agrees to keep accurate, complete and detailed records related to the
development and sale of the Licensed Products and the Marketing Materials. Upon
*** Notice to LICENSEE, NCL may, at its expense, arrange for a third party to
audit LICENSEE's records, reports and other information related to LICENSEE's
compliance with this Agreement.
14.4 Waiver, Severability, Integration, and Amendment. The failure of a
party to enforce any provision of this Agreement shall not be construed to be a
waiver of such provision or of the right of such party to thereafter enforce
such provision. In the event that any term, clause or provision of this
Agreement shall be construed to be or adjudged invalid, void or unenforceable,
such term, clause or provision shall be construed as severed from this
Agreement, and the remaining terms, clauses and provisions shall remain in
effect. Together with the NDA, this Agreement constitutes the entire agreement
between the parties relating to the subject matter hereof. All prior
negotiations, representations, agreements and understandings are merged into,
extinguished by and completely expressed by this Agreement and the NDA. Any
amendment to this Agreement shall be in writing, signed by both parties.
14.5 Survival. In addition to those rights specified elsewhere in this
Agreement, the rights and obligations set forth in Sections 3, 8, 9, 10 and 13
shall survive any expiration or termination of this Agreement to the degree
necessary to permit their complete fulfilment or discharge.
14.6 Governing Law and Venue. This Agreement shall be governed by the laws
of Japan. Any legal action (including judicial and administrative proceedings)
with respect to any matter arising under or growing out of this Agreement, shall
be brought only in the Kyoto District Court. Each party hereby consents to the
jurisdiction and venue of such court for such purposes.
14.7 Equitable Relief. LICENSEE acknowledges that in the event of its
breach of this Agreement, no adequate remedy at law may be available to NCL and
that NCL shall be entitled to seek injunctive or other equitable relief in
addition to any relief available at law.
CONFIDENTIAL
14.8 Attorneys' Fees. In the event it is necessary for either party to this
Agreement to undertake legal action to enforce or defend any action arising out
of or relating to this Agreement, the prevailing party in such action shall be
entitled to recover from the other party all reasonable attorneys' fees, costs
and expenses relating to such legal action or any appeal therefrom.
14.9 Expansion of Rights. NCL may expand the rights granted to LICENSEE
under this Agreement by providing written notice of such expansion of rights to
LICENSEE and without having to enter into a written addendum to the present
Agreement with LICENSEE.
14.10 Delegation of Duties. NCL, at its option, may delegate its duties
under the present Agreement to a wholly owned subsidiary. To the extent
necessary for the parties to carry out their duties under this Agreement, NCL
shall provide notice to LICENSEE of any such delegation, including to whom at
NCL's wholly owned subsidiary communications from LICENSEE under this Agreement
may be directed. Also in the event of a delegation by NCL, the provisions of
this Agreement shall continue to govern the relationship between NCL and
LICENSEE and shall govern the relationship between NCL's subsidiary and
LICENSEE, subject to any amendments or modifications to this Agreement which
such subsidiary and LICENSEE may agree to in their relationship. NCL shall
remain obligated under the present Agreement for the performance of NCL's duties
by NCL's subsidiary.
14.11 Counterparts and Signature by Facsimile. This Agreement may be signed
in counterparts, which shall together constitute a complete Agreement. A
signature transmitted by facsimile shall be considered an original for purposes
of this Agreement.
IN WITNESS WHEREOF, the parties have entered into this Agreement on the dates
set forth below.
NCL LICENSEE:
Nintendo Co., Ltd. Activision, Inc.
By: /s/ Name[?] By: /s/ George Rose
----------------------- --------------------------------------
George Rose
Its: President General Counsel + Senior Vice President
----------------------
Date: Sep. 14, 2001 Date: 8/16/01
--------------------- ------------------------------------
LICENSEE:
Activision UK, Ltd.
By: /s/ George Rose
--------------------------------------
George Rose
Office: Director
------------------
Date: 8/16/01
------------------------------------
LICENSEE:
ATVI France, S.A.R.L.
By: /s/ Patrick Chachuat
--------------------------------------
Patrick Chachuat
Office: Director
------------------
Date: 8/22/01
------------------------------------
LICENSEE:
Activision GmbH
By: /s/ George Rose
--------------------------------------
George Rose
Office: Managing Director
------------------
Date: 8/16/01
------------------------------------
LICENSEE:
Activision Pty, Ltd.
By: /s/ George Rose
--------------------------------------
George Rose
Office: Director
------------------
Date: 8/16/01
------------------------------------
Attachments:
Annex A - Guidelines on Ethical Content
Annex B - Trademark samples
Annex A
Guidelines on Ethical Content
The following Guidelines on Ethical Content are presented for assistance in the
development of Games by defining the types of the theme inconsistent with NCL's
corporate philosophy. Exceptions may be made when necessary to maintain the
integrity of the Game or the Game's theme. Games shall not:
(a) contain sexually explicit content including but not limited to nudity,
rape, sexual intercourse and sexual touching; for instance, NCL does
not allow bare-breasted women in Games, however, mild displays of
affection such as kissing or hugging are acceptable;
(b) contain language or depictions which specifically denigrate members of
any race, gender, ethnicity, religion or political group;
(c) depict gratuitous or excessive blood or violence. NCL does not permit
depictions of animal cruelty or torture;
(d) depict verbal or physical spousal or child abuse;
(e) permit racial, gender, ethnic, religious or political stereotypes; for
example, religious symbols such as crosses will be acceptable when
fitting into the theme of the Game and not promoting a specific
religious denomination;
(f) use profanity, obscenity or incorporate language or gestures that are
offensive by prevailing public standards and tastes; and
(g) promote the use of illegal drugs, smoking materials, tobacco and/or
alcohol; for example NCL does not allow an unnecessary beer or
cigarette advertisement anywhere in a Game; however, Sherlock Holmes
smoking a pipe would be acceptable as it fits the theme of the Game.
Annex B
Trademark Samples
[GAME BOY ADVANCE(TM) LOGOS]
[GBA LINK CABLE LOGO]
[NINTENDO LOGO]
[NINTENDO SEAL OF QUALITY (ENGLISH)]
[NINTENDO SEAL OF QUALITY (GERMAN)]